USPTO considering extending deadline on provisional applications

The USPTO is considering giving applicants with pending provisional patent applications 24 months to file non-provisional applications from the current 12 months. http://www.uspto.gov/news/pr/2010/10_10.jsp

Protecting Inventions Outside the United States I

There is no such thing as an international patent. There is something similar to an international patent application, it's called a PCT (patent cooperation treaty) application, but it merely serves as a placeholder, for filing patent applications in individual foreign countries. Patent applications filed in foreign countries through the PCT receive the benefit of the PCT priority date. The priority date is the filing date of the priority document (if any) listed in the PCT application. A provisional patent application can serve as a priority document. Thus, filing a provisional application can be the first step to protecting your invention domestically and abroad.

Obtaining location updates about a mobile entity for use in a location-sensitive application

The BPAI reversed a patent examiner today on a 103(a) rejection of a claim, in Ex Parte Wilcock et al. The claim was to a method of obtaining the position of a mobile object from a first source at a certain frequency and sending to an application that uses the location data, and decreasing the frequency if there is also a second source of location data. Claim 1 is below:

A method of obtaining location data about a mobile entity for provision to a location-sensitive application, the method comprising:
periodically obtaining location updates indicative of the current location of the mobile entity from a first source of location data; and
extending the interval between the location updates from said first source when location data indicative of the current location of the mobile entity is available from at least one other source of location data that operates independently of said first source and the location updates provided thereby.

Here's the law (applying KSR) the Appeals Board used:

“‘there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

The examiner combined 3 references to obtain all the limitations in the claim. The Board found that none of the references showed varying the frequency based on the presence of a second location data source. This type of argument, if true, is usually the strongest type of argument a patent applicant can make to get over a rejection. Otherwise, the applicant is left to argue that it's impermissible to combine the teaching of the references, which is a tougher one to make if the references are about similar technology. In that case, the board likes to see, among other things, unexpected results when you combine the references, to overturn a rejection.


The Board said that the reference the examiner relied on, Mannings, at best, only provides a disclosure of varying the frequency of providing updates to a positioning system dependent upon changes in system conditions such as the speed of a vehicle, traffic conditions, highway maintenance, etc. (Mannings, col. 8, ll. 48-53 and col. 14, ll. 25-41). None of the references showed changing the frequency based on the presence of another data source.

What might have really won the day was Wilcock's Patent Attorney's argument that, if the teachings of Mannings were combined with Cisneros, the logical result would be that the frequency of location updates would be the same for both sources of location data, a factual situation which does not satisfy the requirements of appealed claims 1 and 14.Wilcock.pdf

Motion Sensor Activated Rock Light

Motion sensitive illuminated article Damian Krause
Is a Motion Sensor Activated Rock Light patentable? See US application serial No. 10/355,389. The Patent Appeals Board answered no, in Ex parte KRAUSE (decided July 14, 2008). The claim applied for was as follows:

1. An apparatus comprising:

a translucent housing having the appearance of an article that is
an element of nature;
a base to which the housing is sealed and in which there is an
access panel;
a light source located within the housing powered by at least
one replaceable battery which acts as a power source and
a motion detector adapted to be coupled to the power source
and to the light source for switching power to the light source
when it detects motion.

The prior art relied upon by the Examiner in rejecting this claim, 3 refefnces:


Animated display Chun Chung Fung


Lighted rock and method therefor Robert G. O'Connell


Pumpkin lighting fixture Sheng Ping Fan


Combined earthquake sensor and night light Lynda S. Samen

All the references together had all of the claimed elements. Fung had the transparent covering, and the motion sensor. O'Connel had a lighted rock. Fan had the access panel and Samen had the battery. All the elements of the separate references were united without any change in their respective functions. None of the benefits of the claimed device was recited in the claims. While the Specification may extol the virtues of Appellant’s invention, the Appeals Board evaluates the claim language alone to determine the propriety of the rejection.

A Patent On A Stick, Literally

U.S. patent 6,360,693 always reminds me there is always some uncertainty in the law of what's patentable. I have to hand it to the patent attorney that handled this patent application. Claim 1 of this patent claims (in fancier words of course) a floating animal toy having a main shaft and a minor shaft coming off the main shaft at an angle. That's it!

The actual text is:

An animal toy, comprising: (a) a solid main section having a diameter and a longitudinal length and extending a predetermined distance along said longitudinal length; and (b) at least one protrusion attached at one end thereof said main section and extending a predetermined distance therefrom and wherein said at least one protrusion includes a second longitudinal axis that is not in parallel alignment with a first longitudinal axis of said solid main section; and wherein said animal toy is adapted to float on the water.

While this patent claim could be invalidated in a court, having an issued patent nonetheless can be quite annoying to one's competitors in the animal toy business. As a matter of patent prosecution strategy, this is why I may sometimes draft at least one claim that I think might be too broad so as to encompass the prior art. I may be wrong, and the client may be entitled to broader protection that I thought.

Patents For Recipes

Many recipes are considered obvious by the patent office even though it may never have been concocted before and it's highly popular. One way to getting a patent on a recipe for food or drink is to show unexpected results. US Patents, 7396555, 4737367, and 6551646 are examples of recipe patents that got granted. Patent applications, 2006/0121173 and 2005/0163908 are examples of recipes that got rejected.

A Recent Application of KSR And Obviousness

Ex Parte Wang et al